The Rona board games, Social Distancing hotels, and Covidiot T-shirts: When trademarks go viral

Medical diagnostic kits, legal services, computer software, stem cells, firearms, various clothing items, and beer — these are just some of the goods and services which are the subject of COVID-19-related trademark applications in different jurisdictions all over the world.

In the midst of the coronavirus outbreak, many enterprising individuals and corporations are attempting to capitalize on one of the worst pandemics in human history. The World Intellectual Property Organization’s Global Brand Database reveals that more than 1,000 trademark applications have already been filed by individuals and business entities worldwide, seeking to register variations of the terms “COVID,” “CORONA,” “CORONAVIRUS,” and other COVID-19-related terms. While a number of these applications involve serious business goods and services such as medicines, supplements, and medical testing, others prove to be superficial and non-essential.

Examples of COVID-19-related trademark applications include:

• “CORONAVIRUS K9 DETECTIVES” for animal training;

• “COVIDIOT” for T-shirts, games, and advertising services;

• “PANDEMIC OF LOVE” for clothing, arranging and conducting of seminars, and charitable services;

• “QUARANTINI” for alcoholic beverages, vitamin and mineral supplements, and downloadable podcasts;

• “THE RONA” for board games and card games; and,

• “SOCIAL DISTANCING” for hotels, exercise equipment, protective face masks, and photography services.

Individuals and business entities have been trying to secure exclusive trademark rights over words or phrases associated with significant events and trending topics for years. A popular instance of this was when the United States President Donald Trump infamously tweeted the term “COVFEFE” in 2017 — since then, 59 attempts to register the term as a mark for all kinds of products and services followed. More recently, the death of George Floyd resulted in a wave of trademark applications for the phrases “BLACK LIVES MATTER” and “I CAN’T BREATHE” not just in the United States, but also in other countries. These two instances of trademarking strategies are minor in comparison to the still-rising number of COVID-19-related trademark applications.

In the Philippines, a handful of COVID-19-related trademark applications have already been filed with the Intellectual Property Office of the Philippines (IPOPHL). To date, these applications are still under examination. On the possibility of COVID-19-related trademarks being registered under Philippine trademark law, the Intellectual Property Code of the Philippines (IP Code) presents some legal obstacles standing in the way.

LACK OF DISTINCTIVE CHARACTER
Under the IP Code, a trademark refers to any visible sign capable of distinguishing goods or services of an enterprise. The IP Code uses the phrase “capable of distinguishing” as a requirement for trademark registration. This implies that a mark can be a subject of a trademark registration, provided that it enables consumers to identify the product (whether a good or a service) of a particular individual or entity so as to distinguish it from other identical, similar, or related products.

From the perspective of Philippine trademark law, it would be difficult for common COVID-19 terms to be registered as trademarks, since these lack the source-identifying function of trademarks. Because common COVID-19-related terms are now customarily used in the news, social media, and everyday conversation, they may be said to be incapable of acting as source-identifiers for any goods or services. Instead of distinguishing the products or services of an individual or entity from those of others, placing the common COVID-19 terms “COVID-19,” “CORONAVIRUS,” and “SOCIAL DISTANCING” on T-shirts, exercise equipment, and educational services will likely be seen as ornamental or informational in nature and necessarily in reference to the virus. With such usage of common COVID-19 terms, the very purposes of trademarks cannot be realized, so consequently, no registration would be allowed.

CONTRARY TO PUBLIC ORDER OR MORALITY
Marks that consist of or contain immoral matter cannot be registered in the Philippines, as well as marks which are contrary to public order. These grounds are relatively broad and are subject to the IPOPHL’s interpretation and application of the law. COVID-19-related trademarks that may possibly be rejected under these grounds are those containing obscene or coarse language and those appearing to be very offensive or distasteful.

ARE COVID-19-RELATED TERMS REGISTRABLE?
All things considered, it is not entirely impossible for creative and distinctive COVID-19-related marks to be registered. A mark that uses COVID-19-related terms to suggest a feature or purpose of the applicant’s goods and services may still function as a trademark as a whole.

It remains to be seen how the relevant trademark registries and intellectual property offices will respond to the pending COVID-19-related trademark applications. As the disease continues to spread rapidly across the globe, more applications are expected to be filed in the coming months to cover various goods and services. As a practical matter, it would be wise for individuals and corporations considering to capitalize on the coronavirus pandemic to first consult with a qualified attorney specializing in Intellectual Property law before attempting to secure rights over COVID-19-related terms.

The views and opinions expressed in this article are those of the author. This article is for general informational and educational purposes, and not offered as, and does not constitute, legal advice or legal opinion.

Danielle S. Cadiz is an Associate of the Intellectual Property Department at the Angara Abello Concepcion Regala & Cruz Law Offices (ACCRALAW).

dscadiz@accralaw.com

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